Some thoughts on Best Mode

As you know, a US application must still disclose the best mode.  The statute’s language and its legislative history (and the fact that the statute still says best mode!) demonstrate that beyond doubt.  However, the AIA made it so that a best mode violation cannot lead to invalidity or unenforceability (among other things).

I’ve been repeatedly told that practitioners are being asked by clients to omit the best mode, particularly in bio/chem areas where it may be best. That is, claim around the best mode, etc.

The PTO’s position is that best mode is required to issue a patent; as a result, leaving it out leaves out information material to patentability.  So you must include it.

How do you get a client’s interest to align with your own?  You candidly have to advise them that the patent will not be invalid/unenforceable if they leave it out. So what downside?

My thoughts have always been that, though by itself its omission cannot now lead to invalidity or unenforceability, perhaps evidence of its omission could be used to bolster intent to deceive, or affirmative egregious misconduct.

Yesterday, while speaking at the PRG program in Orlando (for six hours, just me, on ethics and professionalism — we had a great time, really!), someone suggested that it could also be used in the ITC; you have to be practicing your invention to have a domestic industry. If you’re not…

Any other thoughts?

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

80 thoughts on “Some thoughts on Best Mode

  1. 8

    I haven’t got the patience to wade through the usual Ned-Anon-Max crap. So at the risk of saying what’s already been said:
    1. Under the AIA, lack of best mode (and therefore invalidity) is not a defense to a charge of infringement before a district court.
    2. However, the best mode requirement is still on the books, which means that, in the unlikely situation that (a) a competitor finds out that the applicant hid the best mode and (b) is able to bring this to the attention of the PTO in a proceeding before the PTO, then this can be used to torpedo the application, or to have the patent revoked.
    3. Which means that in a PGR proceeding, which can be based on pretty much anything, not just published prior art, if you couldn’t keep the best mode violation hidden from your competitor, that fact can be used as ammo to sink the patent.

    The only other risk I see to hiding the best mode – if there’s a discoverable record of it being hidden – is if you assert the patent and it’s invalidated on other grounds. Then the hiding of the best mode might be evidence that could lead to sanctions against the patentee and/or its patent counsel.

    But as Howard Hesseman, Krusty the Clown and others have famously said, anything’s ok if you don’t get caught.

    1. 8.1

      Fester, the only post-grant PTO proceeding that is not based on 102/103 and printed prior art is the initial PGR.

      Further, since best mode is not grounds for invalidity, I daresay that it is not grounds for invalidity period, regardless of forum.

      Best mode does not apply to issued patents.

      1. 8.1.1

        Still waiting for an answer from you Ned.

        The fact that you popped back in here and responded to Fester shows that it is a choice of yours not to answer a simple and direct question put to you here.

        Your (continued) silence screams volumes, as you are quite caught in an inconsistency that weakens BOTH your live case in the courts as well as your continued efforts of advocacy on this platform of social media.

        You know that I am not going away and that I too have a choice to highlight your weakened legal state whenever you attempt to hold inconsistent views on the matter. You would simply be better off making a choice and sticking with it.


          anon, it IS interesting that you both assume that I read your posts and that I know what you are talking about.


            No assumptions necessary Ned – read again the comments on this thread. It is quite clear exactly why you have chosen once again to run away from the conversation.

            This happens quite often with you.


              “Run away” again assume that I am reading your posts.

              If you have a question, please ask it once again.


                Criminy Ned – read the thread.

                See post 4. Then below at April 18, at 8:26 am. THEN at

                Please answer the question of (noting that the question was also put to you on at least three threads of the main blog pages).

                1. anon, regardless of “public interest,” under Stern v. Marshall , tracing back to Murray’s Lessee, if a cause of action were litigated in the courts of England in 1789, it cannot be removed from the exclusive jurisdiction of Article III courts.

                  Since actions to revoke patents for invalidity were litigated in the courts of England in 1789, such actions cannot be removed from the exclusive jurisdiction of the Courts.

                  Thus, the whole line of discussion here by the government about public interest is totally irrelevant.

                2. First and foremost, that’s not an answer to my question and completely dodges the point of your inconsistency.

                  Second, your apparent “faith” in the unassailable-ness of the historical context over plays the case. You are in court on this matter, and quite frankly, I think that you are going to lose. The label (especially from you) of “irrelevant” simply carries no persuasive effect.

                  Third, your own posts, particularly concerning public impacts speaks against your expressed views in the live case. I don’t know how to be more blunt with you that you are literally speaking out of both sides of your mouth here. That’s never a good thing for establishing a credible position.

                3. anon, I cannot help you if you simply refuse to read the cases.

                  No amount of PTO or Congressional emphasis on public interest in patent validity can affect constitutional rights.

                  The Supreme Court HAS ruled that as a matter of constitutional law that causes of action tried in the courts of England in 1789 cannot be withdrawn from the Courts.

                  Public rights, to the extent they apply, can only relate to entirely new rights and actions. Patents are not new. Neither are patent infringement and/or patent revocation actions.

                4. Reading cases…?

                  You are injecting a tangent that has ZERO to do with the points at hand Ned.

                  If you “feel” as strongly as you do about this “being a private right” thing, then your stated positions re: web blaster contract discussions

                  Point blank Ned – you still talk out of both sides of your mouth.

                5. anon, the reason you do not understand is that if a right was litigated in the courts of England in 1789, then by definition it cannot be a public right. If something is a public right, Congress has plenary power over it, and can move adjudications involving the right to any forum it chooses

                6. anon, as an analogy, consider that congress declared a public interest in the proper education of migrant children, and moved the writ of habeas corpus for all migrants from the courts to a new agency so that “migrant cases” could be handled with due regard to the public concern over the welfare of migrant children.

                  Thus, if a migrant was arrested, he or she could only petition the new agency, while everyone else could petition the courts.

                  Would this be constitutional? If not, why not?

                7. Ned,

                  You are absolutely missing the point here because you are STILL dodging the question I put to you.

                  You seem to want to have me take an opposite side only to your live court case.

                  That is just not the point.

                  The point instead is that YOU yourself have advanced multiple positions that are in direct conflict, and I am asking YOU to square your own positions and resolve that conflict.

                  You fight incredibly hard to avoid the very simple questions put to you.

  2. 7

    I will try again, to make my point, but this time using other words.

    I think FITF removes the need for a Best Mode disclosure requirement. FITF includes a prior user right (PUR), but only a narrow and uncertain one. It allows inventors the choice of protection, between filing and trade secrets. But failure to include the Best Mode in one’s patent application carries a risk that your competitor will patent it. So, omitting the Best Mode is fraught with risk.

    An example:

    You make dispersion hardenable aluminum sheet for auto makers who press form it then paint bake it. Your unique selling feature is that your sheet exhibits a strong “paint bake response” (PBR). It is soft before the paint bake but hard afterwards. The auto makers love it.

    How do you maximise the PBR? it is a combination of alloy composition, mechanical history (rolling mainly) and thermal history (annealing steps, arificial ageing steps).

    Your patent application teaches a range of alloy compositions, mech histories and thermal histories, but deliberately does not reveal the particular combination of rolling and annealing steps that maximises the PBR for your preferred alloy composition.

    So your sheet out-performs that of your toughest competitor.

    But for how long? How long till they get as good a PBR with the same alloy composition? And what if they patent the process they are using? And what if the auto makers then require a slightly different alloy composition (for better re-cycling) to which you must switch if you want to retain its custom.

    Your process with the tweaked alloy enjoys no PUR. Worse, it infringes your competitor’s patent. Which he only got because you omitted the Best Mode.

    That’s the risk you run.

    1. 7.1

      If your best mode does not fall into the ambit of your claims anyway, revealing it or not is entirely moot.

      Your hypo still blows.

      1. 7.1.1

        Readers, David, just so that you are clear, in my alloy example (drawn from real life), my Best Mode is within the scope of the claim. The range of alloy compositions claimed is (of course) wider than the Best Mode, and wide enough (obviously) to cover the tweak to the Best Mode to render the car body panels more recyclable. A reduced copper content, for example.

        And David, your recent active editing here is noted and much appreciated.


          Tell me how a second patent is then granted if this best mode is within the ambit of the claims of the first patent…


          (And it would be more appreciated if you constructed your hypos with some minimum level of care – as I am sure Quintilian would agree).


            How granted? Well, the normal way, of course. The PTO examines and when it finds the claimed subject matter to be new, useful, enabled, supported by a written description and non-obvious, its Applicant is due a grant.

            The Best Mode (of which we speak) is not disclosed in the earlier application, but is in the later one. As of the later filing date, this subject matter is new, useful, enabled and not obvious. So, patentable. So, fit for issue.

            Don’t confuse what is claimed with what is disclosed. Most every patent claim covers myriad hypothetical embodiments of its invention, and its specification discloses only a tiny selection of the conceivable embodiments, some of which might well exhibit a performance that (surprisingly) exceeds that of the disclosed embodiments.

            Is it your position that the strong patent system of the USA doesn’t (or shouldn’t) do patents for improvements? How else can the reader make sense of your “oops”?


              You are moving the goalposts by trying to not have the nondisclosed – but within the ambit of the claim – item somehow not be covered by that first claim, with a dust-kicking of “surprisingly new range.”

              Put simply, either your second patent is not possible or your second patent covers a new invention NOT covered by the claims of the first patent.

              You seem to overlook the fact that Best Mode has never been a “claim” issue. Whether it shows up or not in the specification is rather beside the point of what the claim covers.

              Your new non sequitur about “not covering improvements” has no bearing on anything that I have posted. How did you end up there?

    2. 7.2

      If you must switch, then you did not have the thing being switched too and neither PUR (trade secret), nor patent even matters.

      Your hypo blows more than I first thought.

    3. 7.3

      I will try again, to make my point, but this time using other words.

      Your point was well made the first time, Max. You didn’t get any response from non-cr@zy people because you were correct.


            “Dude” that would be incorrect.

            Present example: feel free to actually address the points I made in response to MaxDrei.

            Further, long time readers will recognize you as Leopold, the person who routinely cheerleads Malcolm (thus zapping you of any credibility), a member of the Echo club, and the one that told the wrong people to “just shut up” and who on numerous occasions has had to back down from your own smarmy comments when we debated directly (e.g., ladders of abstraction).

            You would be FAR better off simply posting to the issues highlighted than to attempt to cheerlead someone else who happens to be in opposition to me.


            “Dude” you are incorrect.

            Why not address the points I present? Could it be that your history as “Leopold” and “LB” already contain enough times in which your smarminess was smacked down (e.g. ladders of abstraction, cheerleading for Malcolm – that enough to deplete any credibility, telling the wrong people to “just s h u t up”)….

            Step up with more than ad hominem and speak to the shortcomings that I have pointed out.

            If you can.
            If you dare.

      1. 7.3.2

        DanH, it appears that 99% of the posters here have had enough of you know who — someone who does seems to manifest some form of mental illness. Perhaps 6’s diagnosis is on point.


          appears that 99% of the posters here, who belong to a small group of echo chamber people wanting some other law than the one we actually have, have had enough of you know who, and routinely retreat to a pure ad hominem attack instead of actually addressing the inconvenient points raised…”

          There Ned – fixed your statement to restore accuracy.

          Returning now to being on point here, what is your choice?


            You know, anon, I rarely even read your posts anymore. It is the only way this forum is even tolerable.


              It would be far more tolerable if you addressed the points on the table in an inte11ectually honest manner.

              That notwithstanding, and STILL trying to return to the point at hand, what is your choice?


                …or maybe (somehow) you think that my hounding you to actually give answers is some form of trying to keep you quiet and “shout you down”….

                (Your protests are simply illogical and clearly just a diversion from the focus that you are NOT responding to the holes that I put into your propaganda.


      2. 7.3.3

        Tks for those words of comfort Dan. And tks also Ned. David had to step in over the weekend, by the way, to edit out one posting here, from you know who.



          Post was restored this morning.

          As to the “kind words of comfort” – it is telling that you seek comfort in baseless ad hominem while the discussion points languish.

          If you have a problem with a point I put on the table, the “kind” thing to do is address the point, not engage in a C-Jerk parting your echo chamber pals on the back.

          Language can be rough – but let’s not mistake the roughness from your simply being off with any sense that those cooing with you have addressed any of the faults pointed out.

  3. 6

    Malpractice? Your client asks you to omit its best mode. You do. Later your application fails to grant or your granted patent fails to stop the competitor. All because it lacks a disclosure of the best mode.

    Worse, your client’s competitor files soon after your client, an application that includes what is in substance the same as your client’s best mode. And that competitor gets it to issue.

    Your client, by now losing business heavily, is furious with you. Did you explain back then, ALL of the possible adverse consequences of omitting the best mode? Did you really give the client all the information needed for an informed decision in the new AIA FITF world?

    1. 6.1

      It is almost amusing how inapt MaxDrei is as he stumbles about US law.

      Tell me MaxDrei, how does the competitor’s application “come to issue” (properly) if a prior filing “subsumes in the greater imperative” that which while not explicitly shared is nonetheless enabled?

      Or do you want to amend your hypo and also include this “lack of enablement” in the first filed item (which rather changes the intended point)…?

      After that, then we can perhaps talk about the AIA “naked self interest” of the new Prior User Right, which encourages NOT sharing inventions, but instead encourages hiding inventions (including best mode and trade secrets) and being able to piggyback off of someone else who does decide to fully engage the patent system.

      And for that discussion, let’s keep in mind which type of entity pushed to include that little “jewel” in the AIA.

      And further, as I noted, inclusion of Best Mode is hardly “irrelevant” to the public who obtains the rather obvious benefit of a more robust sharing in the Quid Pro Quo. I am not sure exactly why you want to obscure that fact by attempting to switch the focus and try to make Best Mode be somehow “irrelevant.”

      1. 6.1.1

        Some bloke called Quintillian had some good advice for those who fancy themselves as writers. Do not be content that one’s writings are capable of being understood, he counselled. Instead, your aim should be that what you write is impossible to misunderstand.

        I shudder to think what he would have written about you, anon. Perhaps your friend Night can interpret for me because, at the moment, I have no idea what you are getting at.


          “Blame the writer” is a rather p1sspoor excuse for your lack of understanding MaxDrei.

          But let me be more blunt:

          You offer a hypo in which a second party obtains a patent and the only way that happens is if some unrelated condition (non-enablement) occurs.

          That you cannot see the weakness in your own hypo speaks to your rather clumsy articulations (gee, what would Quintilian think…?)

          I then offered an additional discussion point concerning the AIA and Prior User Rights that touches upon your thought below of a system that “uses naked self-interest to encourage good behavior” (not sure how you missed the quotes).

          It’s more than just a little funny that you can recite historical figures of rhetoric, yet you yourself wield those tools so poorly.


          I am sure that Quintilian would have sympathized with me as he would stare aghast at the mountains of rotting horse carcasses that o have led (you) to water but from which wells of wisdom you refuse to drink.

  4. 5

    Best mode used to be a quid pro quo for a patent grant, in order to prevent inventors from gaining a monopoly for the life of a patent, and then maintaining the “best mode” known to the inventor as a trade secret when the patent expires.

    After the AIA, there does not appear to be any consequence for labeling an embodiment as the best mode while withholding description of a better embodiment. Examiners are likely to be satisfied by such labeling (with the inventor’s oath) and are not equipped to investigate whether the inventor is withholding his or her known best mode.

    While some clients may want to take advantage of the AIA’s best mode invalidity exemption, attorneys should counsel their clients to follow their duty of candor.

    1. 5.1

      steve, true.

      But, so what?

      If the disclosure is sufficient to allow one to make and use, why add the requirement that the disclosure include a commercial embodiment. That seems to be overkill.

      1. 5.1.1

        While many of Steve’s posts appear clumsy and from one without a deep understanding of the history of patent law, he has the better position here Ned.

        Yes, the requirement does “sound” in a particular commercial embodiment and yes (as I indicate below), this does seem “overkill” (I would use a different word, but yours is close enough), the requirement does reflect the desire to engage the Quid Pro Quo aspect of sharing a specific teaching. The sharing is less one of gen er al knowledge and more one of preferred knowledge, but it is nonetheless a sharing of particular knowledge, and is geared for robustness.

        And Ned – you should recognize the Big Corp fingerprints in the AIA and the removal of the effectiveness of having this requirement. It’s a bit duplicitous to pretend not to notice who benefits most from this degradation of the Quid Pro Quo.

      2. 5.1.2

        UK had “best mode” till 1978, when it harmonised with the EPC. Does anybody regret its passing? As far as I know, not one solitary soul.

        As Ned says, best mode is superfluous, and subsumed in the greater imperative of providing a disclosure that enables over the scope reserved by the claim. Infringers sometimes copy your best mode but more often want to operate somewhere else in the claimed area, where there own business development path lies. That they should be prevented from operating there, by the grant of a patent to their competitor, is OK only when the patent enables in the area where they want to operate. Patentee’s “best mode” is, for them, irrelevant.

        How about best mode and trade secrets? The usual dilemma. Your best mode will be your most patentable asset, simply because it is the best way ie the way to the best results. Results count, when it comes to impressing the PTO or a judge that your claim is meritorious enough to be not invalid. So, omitting your best mode from your AIA FITF appln as filed carries consequences. Your competitor might next day patent it. What then?

        I like a patent law that used naked self-interest to encourage good behaviour. The requirement for validity, that the claim be enabled over its full scope is the encouragement we need.

  5. 4

    Strictly curious Ned – and distinct from the conversation below – but is your opposition to 37 CFR 1.56 due in part to your current live case before the court?

    To wit: the very first sentence of this rule is

    A patent by its very nature is affected with a public interest.

    As I pointed out on another thread (funny there as typical the conversation ended abruptly on your end when faced with a point you don’t like), the government’s brief against you was not answered by your brief in one rather important manner.

    The government in part argued that the patent right (implicitly perhaps recognizing that the patent right is legally defined to be a personal property – private right), is nonetheless such a (personal) right that is “affected” enough so that while perhaps still personal, is deemed worthy to be treated as a public right.

    Let me also add – from yet another conversation that saw you disappear abruptly – that your own recent posts concerning treatment under contract law were not sufficient because you deemed the private right to contract “not enough,” which as I pointed out aligns directly against your live case.


    Will we see you finally attempt to square these discordant views, or (much more likely) see you stammer, then cut and run?

    1. 4.1

      anon, my opposition to Rule 56 goes back to when I first started practicing, circa 1980. At that time, the plague of inequitable conduct charges in courts was overwhelming the patent system. Everyone knew that the source of the problem was Rule 56.

      I have long thought that the best and only solution to this problem was to repeal the rule.

    2. 4.2

      anon, so you read our reply brief, and thank you for your remarks.

      What did I say about “public concern.” Do you want to quote it here?

      1. 4.2.1


        My comment does not concern what you DID say in your brief, but more importantly what you DID NOT say in reply to a more nuanced argument that the government made – as I noted here (and elsewhere).

        I am far more interested in that conversation.


          Well, anon, are you arguing the equivalent of the following argument: that one’s right to own a arms does not extend to owning WMD’s?

          There is a point at which property rights must yield to the public interest?


              That’s just it Ned – it is not my argument. Rather, it is a nuanced position that is captured in the governement’s brief and an argument that you did not respond to in your reply.

              Further, and certainly separate from your live case considerations, the aspect that I pointed out that is not congruent is your own position on the “public dangers” aspect of not controlling contract aspects because of the impact to the public.

              I think that you should read again Brulotte and note the anti-patent tones suffused throughout Douglas’s writing. Contrast that with the spider man web blaster case that seeks to dump Brulotte – and why the “per se” aspects should join the rest of the per se aspects as falling to a rule of reason.


                Anon, here is the relevant portion of the brief. What argument of the government was not addressed?

                “Neither the Director nor HP rebut that a patent is property, nor do they question that a patent is a legal right that involves the liability of one to another under the law. Instead, they argue that because a patent is a statutory right that affects the public at large that that alone is sufficient to convert a private right into a public right so as to justify allocating adjudications involving that right to executive agencies. But the Supreme Court recently considered the issue of whether a patent affects the public at large. In Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, slip at *11 (2015), the majority addressed the argument of Justice Thomas in dissent that patents were like statutes, affecting the public at large. In so doing the majority held that “[s]tatutes, in general, address themselves to the general public; patent claims concern a small portion of that public.”
                While patents in general may affect the public, individual patents do not. Ibid. Individual patents are exclusive rights granted to an inventor of an invention who has disclosed that invention to the public in exchange for exclusive rights. Only those members of the public who exploit that very same invention are ultimately affected by the patent.
                Thus, while the public may have a general interest that patents are validly issued, a particular patent does not affect the public generally as does a statute. Moreover, there is simply no support for the premise that the public having a general interest in ensuring that patents are validly issued translates into Congress being able to deny a patent owner access to an Article III court to resolve issues of validity before revoking the patent owner’s patent.”

                1. Ned,

                  You are still not listening.

                  Your brief is quiet on the point that I mention.

                  The government has more than one argument and you only focused on the one.

                2. Asked – and answered several times now Ned.

                  The government intimates that even if the patent right is recognized as a private right (the fact that Congress designated patents to have the aspect of personal property), this particular personal property STILL is “a patent by its very nature is affected with a public interest

                  So infected indeed so as to enable a public rights treatment.

                  You yourself reflect this in your posts related to contract law, choosing not to see that reflection does not make that reflection disappear.

                  You just cannot have it both ways – you cannot have it such that there is a level of public danger so as to limit individual ability to contract as they voluntarily see fit, imposing the government into such private affairs and then beg off that the patent right is a private right. That is why I asked you for a better example than a FDA controlled patented item, as that example is clearly special in that another government agency oversight is invoked – and clearly, the spider man web blasters invoke NO such concerns.

                  Your efforts – as extensive as they have been – to NOT address this clear point I have put on the table scream loudly – and what they scream is something that is less than flattering of your willingness to engage in a full dialogue on the merits of the legal points.

                  I do “get” that you have an active case in the courts and that having this dialogue very well may impact that case – but that is your problem in the first place by choosing to attempt to advocate here and to attempt to try your case in the court of “public opinion.”

                  You have so chosen to do, and you cannot escape either the cross examination that such as my questions provide, nor the results of those questions (your losing the points of discussion as evidenced by your running away or by your attempts to obfuscate or by (the nobler) acknowledgement of a better position).

    3. 4.3

      “Right to Contract.”

      Jog my memory please. Does this have something to do with exhaustion?

      Anyway, the way I see that issue is this:

      One can can impose by contract conditions in a license to make and use.

      One cannot impose by contract conditions after an authorized sale.

      1. 4.3.1

        Conditions unrelated to the patent – such a payment schedules – should be freely able to be set by mutual and unfettered agreement.

        We are not talking about contracts of adhesion here.



          I thought I agree with you.

          Brulotte was only concerned with royalties for post expiration acts that are infringements.


              Not really, anon. The problem with post expiration royalties occurs when there is no effort to distinguish what those payments are for.

              When one is licensing multiple patents and the royalties do not go down when patents expire, there might be a problem.

              The simplest way to fix this is to carefully structure royalty agreements.


                Yes really Ned – bottom line, is not how the choice of whatever payment schedule that private parties come to an agreement over really just a matter of private concern?

                As I mentioned, these are NOT contracts of adhesion and NO ONE is forcing either private party to agree to a payment term that they do not want, and such payment terms have ZERO effect on the gen er al public – unless of course, you think that gen er ally that patents have some over-riding infection of public interests (which is the opposite of your stated view in your live case).

                Choose Ned. Choose one or the other. As it is, your attempt to want both merely weakens your “persuasiveness” on both.

  6. 3

    Patent profanity of a different sort.

    Let’s add some complications:

    The AIA eviscerated the statute with wholesale removal of “with deceptive intent.”

    I have asked (but have never received an answer) as to WHY this was done. So again, Why was this done?

    A point of clarification: I think the phrase “claiming around” is not clear and seems to indicate a misunderstanding of just where “best mode” falls. Certainly, claims remain separate in a distinct manner from the “listed” best mode AND the desire remains for the claims to cover and protect the best mode. It strikes me as most odd to think that claims are desired to somehow go “around” and not encompass the best value proposition of the client’s.

    An important point to remember: best mode was (and is) always a subjective determination through the eyes of the inventor. This is necessarily complicated by the fact that with the AIA, applications are more readily being prosecuted NOT by the inventor, but by the assignee (read that as the Big Corp power grab if you want to). What the inventor views as Best Mode – subjectively and what (the typical client) Big Corp view as Best Mode can be two radically different things.

    As to the PTO’s position, I will say this: It is wrong on its face.
    This stems from the fact that patent claims covering the best mode are still being made – and are still in front of the Office. The “materiality” angle does not reach as the Office wants to imply. There is NO “but for” risk because of the lack of explicitness, if what is being pursued goes beyond that explicitness.

    What IS impacted is that the (subjective) best and most explicit “teaching” may not be being shared. This DOES seem to fly in the direct face of the Quid Pro Quo exchange. But as noted, a requirement that is not enforceable is hardly a requirement at all.

    It is simply FAR too easy for the applicant’s representative to meet their “duty” to BOTH the Office and to the client with a FULL explanation that the representative needs to ask for the best mode but is powerless to do anything at all if the client decides NOT to share the best mode.

    It gets a little more tricky if the client DOES share the best mode and then instructs the representative to omit that knowledge. Once known, the duty to be forthright MUST overcome the duty to the client. Basically, to optimize our functionality and worth, we are forced to the Hobbes choice – a veritable Kobayashi Maru or Hobbesian trap. To satisfy both masters, we need to foster plausible deniability and KNOWINGLY inform the client as to how to evade the still-legal requirement.


    Your view as to Rule 56 being ultra vires – to be perfectly blunt – is asinine and unsupportable. The Office has every right (by law) to ask for what they ask for in the prosecution phase. That there is a serious disjoint effect between that phase and what the courts have said applies in the post-grant phases, as well as the serious disjoint created by the legislature in the AIA has NO bearing on the remaining right (again, by law) of what the Office can ask for. We covered this in some detail after the Therasense case and your views remain every bit as wack and lacking the nuanced understanding that there is more than one aspect in play.

      1. 3.1.1


        Or perhaps better asked, how is it substantive as to going beyond what the federal agency has been provided authority to do? (See 35 USC 2 and specifically 35 USC 2(b)2(A)…)


          anon, the office seeks to impose a “duty” on everyone, not just practitioners, involved in a patent application. What is the penalty for a violation but unenforceability of the issued patent. But the PTO has in the past voided applications for violation of its rules of disclosure. They simply choose not to enforce today.

          That is effectively legislation from the PTO


            Don’t move the goalpost by switching to the penalty for violation – keep your eye on the ball of the question directly in front of you.

            (The EXACT same movement can be seen to occur with outright L Y I N G under oath – or did you want to toss that as well as being ultra vires?)


              anon, the Supreme Court cases that developed the so called duty of candor all involved active steps to mislead, to suppress information, or keep information from the examiners that only the applicants could know about.

              I do not believe the office can impose a duty of candor different from that recognized by the courts, period.

              By rule, the office could require the applicant to submit public use or on sale information that the examiner could not access. The office could also require the submission of references identified in searches as highly relevant or used in rejecting the claims in foreign counterparts. Ditto litigation — but here there are problems caused by protective orders.

              Beyond that, forget it. No patent office in the world thinks it necessary for the applicant to conduct a search for the examiner. But to require the applicant to disclose the results of a search on pain of voiding his or her application only results in applicants not conducting any search at all.



                You (again) display your over-exuberance for the Royal Nine.

                It should be abundantly clear to you that your statement of “I do not believe the office can impose a duty of candor different from that recognized by the courts, period.” is a pure statement of Belieb untethered to any actual Rule of Law.

                I have given you the statutory authority.

                Nothing you have posted addresses this.

                All I see is a lot of frantic hand waving. It is critical that you recognize the extent of actions before the Office simply is different than actions in the Article III courts. You failed to recognize this in our Therasense discussions and you continue to choose ignorance here.

                1. Thereasense held the PTO does not have authority to impose a duty of candor different from the courts.

                2. That is most definitely not the holding from Therasense and you continue to fail to see that there are multiple domains of action and that the Officr has the statutory authority to control what happens prior to grant.

                  Repeating your error over and over and over again, clenching tight your eyes, with your fingers in your ears will not make your error go away and will not remove the statutory authority that the Office has.

    1. 3.2

      Why remove best mode and deceptive intent?

      I met Bob Armitage circa 1992. By then, he had long been a leader in patent reform, mainly to get rid of interferences. But he also wanted to get rid of “best mode” and “deceptive intent”and to some extent, rule 56.

      As you say, best mode is a creature of intent as are both “deceptive intent” and rule 56. I think Bob really want to get subjectivity out of US patent law. A patent either is valid or invalid and that is something that can and should be determined objectively.

      Bob eventually persuaded everybody that he was right, and I must say, I am glad he led the effort.

      1. 3.2.1

        There is FAR more here than your simple whitewash Ned – and remember that Mr. Armitage serves the interest of Big Corp first.

        There are times when your naivite is staggering.


          Actually, Big Pharma.

          But, so what?

          I have always found Bob to have a deep understanding of the issues. I listened with respect.

          That does not mean that I agree with everything that Bob proposed. I still think that allowing one to continue to perfect his or her invention without worrying about his or her rivals is a better system in principle. But, interferences were and still are a major problem.

          Thus my proposal the other day to allow one to swear behind prior art based on a corroborated invention disclosure that supported the claims and which was filed with the application, but to award the patent to the first to file in the case of rival applicants to the same invention.

          I also do not agree with his repealing of 102(f) for reasons previously stated. But Bob wanted to get the question of inventorship out of the courts entirely. Thus the repeal.


            But so what?

            You cannot be F N serious.

            As for the “problem” with interferences, why then did we take them almost directly into the AIA, only arguably making them less effective?

            I don’t buy what you are attempting to sell.

  7. 2

    Interesting. I’ve often wondered if, as a zealous advocate, we have the duty to inform the client that “Although the best mode is ‘required,’ the patent can’t be declared invalid for omitting it” (with the unstated understanding that a competitor might copy the best mode, so as long as you don’t say anything to me, we are good leaving it out).

    Will we see a malpractice case someday because the attorney didn’t advise the client that the best mode wasn’t really needed, inasmuch as a requirement without a penalty for omission isn’t a requirement at all, who knows?

    1. 2.1

      Agreed. I talked about this the other day, and I know that clients are putting real pressure on practitioners to omit it.

      What will happen is that it will bite someone in some way were not thinking about now, or someone has mentioned in this thread.

      Then it will be, uh-oh.

      1. 2.1.1

        Prof. Hricik,

        I see that you are emphasizing the point that the client is putting pressure on the practitioner to not include the best mode – would I be reading your comment correctly to read into this that a specific item is known by the client and the practitioner and that specific item is the item being pressured to be left out?

        I tried to reach this situation with my comment of “It gets a little more tricky if the client DOES share the best mode and then instructs the representative to omit that knowledge. Once known, the duty to be forthright MUST overcome the duty to the client. (emphasis removed).

        I think that in the situation where the client makes known that a best mode is known and not wanted to be included is pretty clear cut for the practitioner (sins of omission are still sins and all).

        I think instead the more devious route (and the “damm scriviners ‘getting around’ the letter of the law” route will be when the client remains silent as to whether or not the best mode is included after the practitioner informs the client that there is no effective penalty for the client not to tell the practitioner at all about the best mode. That this smells of the simple Machevalian “plausible deniability” is not enough (in my opinion – although I am willing to be persuaded otherwise) to either place the practitioner “in harm’s way” or to prevent clients from concealing the true best mode.

        As I indicated, if the claims anyway cover that Best Mode, then there is no “but for” position reached, and the Office stand fails the Therasense standard for any actions after the application leaves the Office. Since in my scenario, the practitioner has plausible deniability, the Office cannot reach him, and what – if anything – can the Office do against the client at that point in time, in view of Therasense?

  8. 1

    David, the question really is whether one of ordinary skill can make and use the invention. Best mode at best is archaic. It really needs to be removed from 112.

    Until then, defiance of the PTO and compliance with the wishes of the client is the way to go.

      1. 1.1.1

        David, the duty of a patent attorney is to get a valid patent for his client.

        Defiance of Congress is a constitutional right.

        Defiance of the PTO when in conflict with the obligations to the client within the law is the right and obligation of any attorney.

        Rule 56 is ultra viries.


          And I suppose Star Fruits v. U.S. would have gone completely differently if you had been the one arguing it?


            APoTU, the applicant should have provided the information requested under Rule 1.105 on foreign uses and sales, let the PTO enter its 102 rejections, and taken the issue up through appeal.

            The route they chose, to challenge the requirement through the Director->district court was a bit off course.

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